Securian Financial Group, Inc v. Warren Zaccaro
Claim Number: FA1704001727086
Complainant is Securian Financial Group, Inc (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA. Respondent is Warren Zaccaro (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <securianfinancialgroup.net> and <securianfinancial.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Gandi SAS.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2017; the Forum received payment on April 14, 2017.
On April 15, 2017 PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <securianfinancial.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
Additionally, on April 18, 2017, Gandi SAS confirmed by e-mail to the Forum that the <securianfinancialgroup.net> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On April 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@securianfinancialgroup.net, postmaster@securianfinancial.net. Also on April 19, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Securian Financial Group, Inc., is in the business of global financial services, providing investment banking, securities, wealth management and investment management services. In connection with its business, Complainant uses the SECURIAN trademark. Complainant has rights in the SECURIAN mark as a result of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,637,008, registered Sep. 25, 2001). Respondent’s <securianfinancialgroup.net> and <securianfinancial.net> domain names are confusingly similar to the SECURIAN mark because they both incorporate the mark in its entirety, merely inserting the generic term “financial”, with one adding an additional generic term “group.” Both make use of the “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <securianfinancialgroup.net> or <securianfinancial.net> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the SECURIAN mark in any respect, and Respondent is not otherwise commonly known by <securianfinancialgroup.net> or <securianfinancial.net>. Respondent has caused both disputed domains to resolve to blank pages with no recognizable content. This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. While the webpage itself may be blank, Respondent uses the disputed domain name to affect a phishing scheme through email. Complainant was notified by other businesses which had received emails from email addresses associated with both <securianfinancialgroup.net> and <securianfinancial.net>. The emails sought to appear to be emails from the Executive Vice President and Chief Financial Officer (“CFO”) of Complainant. The emails sought to inquire about voice over IP (“VOIP”) services and offers for mobile phone sale. Efforts to obtain personal information for financial gain with no legitimate purpose for doing so constitute attempts at phishing. Use of a domain name for the purposes of phishing information for the Respondent’s own purposes does not evince rights or legitimate interests.
Respondent has registered and used the domain names <securianfinancialgroup.net> and <securianfinancial.net> in bad faith. Respondent’s use of the disputed domain to engage in a phishing scheme also evinces bad faith under Policy ¶¶ 4(b)(iii) and 4(b)(iv). Respondent registered the disputed domain names with at least constructive knowledge of Complainant’s prior use of, rights in, and goodwill associated with MORGAN STANLEY. Constructive or actual knowledge is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Additionally, Respondent’s use of the name of Complainant’s CFO in the registration of both disputed domains, and the use of Complainant’s official address in the registration of <securianfinancial.net> is another showing of bad faith under ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Securian Financial Group, Inc., of St. Paul, MN, USA. Complainant is the owner of domestic registrations for the mark SECURIAN, and related variations, which it has continuously used since at least as early as 2001, in connection with the provision of retirement, insurance, and investment products and services.
Respondent is listed as Warren Zaccaro, of St. Paul, MN, USA. Respondent also lists an address purported to be in Paris, France. The Panel notes that the disputed domain <securianfinancial.net> was registered on or about March 29, 2017, and the other disputed domain <securianfinancialgroup.net> was registered on or about April 5, 2017
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, Securian Financial Group, Inc., is in the business of global financial services, providing investment banking, securities, wealth management and investment management services. In connection with its business, Complainant uses the SECURIAN trademark. Complainant has rights in the SECURIAN mark based on its registration with the USPTO (Reg. No. 2,637,008, registered Sep. 25, 2001). Past panels have found that registration with the USPTO is sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel here finds that Complainant’s evidence of a USPTO registration for the SECURIAN mark is sufficient to establish rights under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <securianfinancialgroup.net> and <securianfinancial.net> domain names are confusingly similar to the SECURIAN mark because they both incorporate the mark in its entirety, merely inserting the generic term “financial”, with one adding an additional generic term “group.” The addition of a generic term, or terms, have been found insufficient by panels in taking the disputed domain out of the realm of confusing similarity. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Previous panels have also held that the gTLD “.net” does not save a domain name from confusing similarity with a mark. See Vince Andrich v. AnonymousSpeech AnonymousSpeech, FA 1406333 (Forum Oct. 26, 2011) (finding confusing similarity per Policy ¶ 4(a)(i) as “Respondent’s <vinceandrich.net> domain name is composed of Complainant’s mark, without the space between words, combined with the gTLD “.net.” These changes do not distinguish the disputed domain name from Complainant’s VINCE ANDRICH mark.”). The Panel here finds that Respondent’s <securianfinancialgroup.net> and <securianfinancial.net> domain names are confusingly similar to the SECURIAN mark per Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the <securianfinancialgroup.net> or <securianfinancial.net> domain names. Complainant claims that Respondent is not commonly known by the disputed domain names and Complainant has not licensed or permitted to use the SECURIAN mark in any respect. The Panel notes that the WHOIS information of record identifies registrant as “Warren Zaccaro.” Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel here finds that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent has not made any use of or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The use of a domain name that is confusingly similar to a complainant’s trademark without a demonstrable intention to make use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant contends that Respondent has caused <securianfinancialgroup.net> and <securianfinancial.net> to resolve to blank pages with no recognizable content. The Panel here finds that such behavior by a respondent is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Additionally, Complainant alleges that while the webpages of the disputed domains may be blank, Respondent uses the disputed domain names to affect a phishing scheme through emails associated with both domains. Complainant identifies emails from addresses associated with both domains that were sent to other businesses who notified complainant of such emails. Complainant points out that the emails in question appear to be from Warren Zaccaro Executive Vice President and CFO of Complainant. Complainant alleges that Respondent used Mr. Zaccaro’s name combined with both disputed domain names to inquire about VOIP services and offers for mobile phone sale. Efforts to obtain financial gain with no legitimate purpose for doing so constitute attempts at phishing pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). The Panel here finds that the use of the disputed domain names for phishing purposes by Respondent is not a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims Respondent has registered and used both <securianfinancialgroup.net> and <securianfinancial.net> in bad faith. Complainant asserts Respondent’s impersonation of Complainant’s CFO disrupts Complainant’s business in a way that indicates bad faith under Policy ¶ 4(b)(iii) as well as under Policy ¶ 4(b)(iv) . Panels have determined that the use of a domain by a respondent to impersonate a complainant’s executive constitutes bad faith registration and use. See Brownell Travel, Inc. v. Troy Haas, FA1411001589137 (Forum Dec. 20, 2014) (finding the use of the domain name to send emails impersonating the CEO to the Complainant’s Account Manager to attempt to commit fraud on the Complainant constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As previously indicated, emails were sent from email accounts using both disputed domains. The Panel finds that alleged attempts to impersonate Complainant’s CFO indicate bad faith registration under Policy ¶ 4(b)(iii) as well as under Policy ¶ 4(b)(iv), owing to the attempted use for commercial or monetary gain.
Complainant declares that Respondent’s use of the disputed domain to engage in a phishing scheme also evinces bad faith under Policy ¶ 4(a)(iii). Panels have defined “phishing” as “a practice that is intended to defraud … into revealing personal and proprietary information”. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum August 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Complainant claims that the email sent from the disputed domain address was an attempt to compel Complainant’s vendor to release private and proprietary information. The Panel here finds that Respondent has registered and used the disputed domain to engage in a phishing scheme, evidence of bad faith pursuant to the language of Policy ¶ 4(a)(iii).
Next, Complainant argues bad faith from Respondent’s registration of the disputed domain names with false information. Panels have agreed that a respondent’s use of false contact information in connection with the registration of a domain name is evidence of bad faith registration and use. See 3636275 Canada v. eResolution.com, D2000-0110 (WIPO Apr. 10, 2000) (finding that use of false registration information constitutes bad faith); and See General Commc’n, Inc. v. General Commc’n Inc., FA 778968 (Forum Oct. 4, 2006) (finding bad faith registration and use where the respondent listed the complainant’s contact information instead of its own information in the WHOIS database). Complainant points to the WHOIS information for both domains; <securianfinancialgroup.net> using the CFO’s name as the contact information and <securianfinancial.net> using both the CFO’s name as well as the address of Complainant as the registration address. The Panel here finds that Respondent’s submission of false information is another example of bad faith registration and use under Policy ¶ 4(a)(iii)
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <securianfinancialgroup.net> and <securianfinancial.net> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 31, 2017
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